Lever Bros. Co. v. Proctor & Gamble Mfg. Co.

• Decision Date: 07 May 1941
• Docket Number: Civil Action No. 1058.
• Parties: LEVER BROS. CO. v. PROCTOR & GAMBLE MFG. CO. et al.
• Court: U.S. District Court — District of Maryland

38 F. Supp. 680

LEVER BROS. CO. v. PROCTOR & GAMBLE MFG. CO. et al.

Civil Action No. 1058.

District Court, D. Maryland.

May 7, 1941.

Worthington Campbell, Eben M. Graves, and Houget, Neary & Campbell, all of New York City, Walter J. Blenko, of Pittsburgh, Pa., Charles W. Riley, Roger T. McLean, and Pennie, Davis, Marvin & Edmonds, all of New York City, and Edgar Allan Poe and Bartlett, Poe & Claggett, all of Baltimore, Md., for plaintiff.

Marston Allen, E. S. Allen, and Allen & Allen, all of Cincinnati, Ohio, Francis G. Cole, of Washington, D. C., Thomas J. Byrne and Cooper, Kerr & Dunham, all of New York City, A. C. Denison, of Cleveland, Ohio, Frank F. Dinsmore, of Cincinnati, Ohio, and William A. Grimes and Ritchie, Janney, Ober & Williams, all of Baltimore, Md., for defendants.

CHESNUT, District Judge.

This usual type of patent infringement case has reached the stage only of motions on interlocutory matters. The complaint was filed February 27, 1941. On March 18, 1941, defendant moved for a bill of particulars; on March 20, 1941, the plaintiff obtained leave to take depositions of Tyler Weymouth, an officer of the defendant, pursuant to rule 26(a), Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c. The defendant's answer has not yet been filed.

On the examination of Weymouth (covering 63 typewritten pages) the witness declined to answer certain questions, the objections to which by the defendant were placed principally on the ground that they required a disclosure of the defendant's secret trade process. In consequence, on April 25, 1941, plaintiff filed a motion for an order to compel the witness to answer these questions; and on the same day filed a separate motion for the production of documents for inspection, copying or photographing. The defendant objects to the production of such data primarily on the same grounds, that it would require disclosure of its secret trade process; and also because the documents demanded are not "designated", and the demand is too general and inclusive.

Plaintiff produces and sells the widely advertised Lux soap, and has recently (September 24, 1940, as assignee of Bodman) obtained United States Letters Patent No. 2,215,539 for an improved process of making soap which it is now widely advertising under the trade name of "Swan". The defendant is the well known producer of Ivory soap which in past years has been extensively advertised as "99 44/100% pure", and since 1939 has been made by an improved process. The competing products look alike, are of like size, sell at the same price and are said to have generally similar qualities. It is apparent at once that the parties are in sharp competition for an extensively used household article.

The specifications of the plaintiff's patent state that its new process produces for the first time a milled soap which will float, and that it is also aerated. The first ten claims of the patent are for the process and the second ten claims are for the product. Claim 1, which is typical of the broad process claims, reads as follows:

"A process for making a floating soap with a uniformly aerated continuous mass having a dispersion of fine voids throughout and having a characteristic texture and firmness similar to milled soaps and shapestability, comprising subjecting a soap mass having a moisture content of less than about 25% to a temperature at which the mass is plastic or semi-fluid and continuous, aerating the continuous mass with a compatible gas, and forming the mass into bars or cakes."

Analysis of this claim (apart from the product itself) shows that the process comprises (1) heating a soap mass until it is plastic or semi-fluid and continuous; (2) which mass has a moisture content of less than 25%; (3) aerating the mass, and (4) forming it into bars or cakes.

Claim 5 is more specific, and includes elements (1) of moisture content of the soap mass 5 to 25%; (2) working the soap mass in a closed chamber in the presence of air at a temperature from about 160 to 225 degrees F.; (3) uniformly dispersing air throughout the mass and (4) while maintaining sufficient pressure to retain air in the mass (5) releasing the mass to cause it to solidify in a continuous aerated state.

As a result of the hearing on these motions, at which time the respective parties were represented by numerous counsel and the subject matter somewhat elaborately argued, the defendant's counsel voluntarily made substantial further disclosures with regard to the nature of its process for the manufacture of its improved Ivory soap, and also supplied certain other incidental information in response to certain questions which had not been answered by the witness Weymouth, so that the remaining questions unanswered in substance call for full disclosure of the defendant's alleged secret process. The comprehensive question presenting this issue as put to the witness by plaintiff's counsel was:

"Now Mr. Weymouth, will you please describe for us, in your own words, the process of manufacturing new Ivory from beginning to end?"

The defendant's disclosure made at the hearing and the statement of its position was submitted in the form of a typewritten statement reading as follows:

"Molten kettle soap is first reduced in moisture by heat and evaporation, while remaining molten, resulting in a molten soap of 22½% moisture. This soap without loss of temperature is caused to flow through proportioning equipment where perfume, other ingredients and air are injected into the soap. The apparatus used at this stage is shown in the Burt patent of Proctor & Gamble No. 2203980 (copy attached). This equipment ends with a pump, in this instance a gear pump, which acts to commingle the soap, perfume ingredients and air, causing the material to flow through a conduit and to continuous refrigerating equipment.

"We desire to keep confidential the details of operation at this stage. In the equipment, which is really a continuous ice cream freezer equipped with scrapers, the soap is rapidly chilled in about twenty seconds. The machine is a well known machine known as a Votator. In practice the refrigerating equipment has an outlet casing, through which the soap passes, equipped with stirrers with (which) commingle, for a few seconds, the colder and warmer portions of soap. This casing has an outlet opening in the shape of a bar through which the soap extrudes.

"The extruded bar is form retaining but lacking in mechanical strength and is discontinuous or granular. The pump first mentioned above causes the soap to flow through the refrigerating equipment. There is no pressure on the soap except such as to maintain this flow.

"Without further working, the extruded bar passes through other chilling equipment, the final product ready for cutting and stamping being at slightly above room temperature. We do not want to be required to give details as to this final chilling stage of the process other than above."

It thus appears that the defendant admits that its process at least includes some of the elements of the plaintiff's broad claim No. 1; in that the defendant's process involves a soap mass of less than 25% moisture content which is aerated, and possibly the defendant's mass is also to be properly considered plastic during the process. It is therefore arguable that if the plaintiff's broad process claim is valid the disclosure made by the defendant would constitute a prima facie case of infringement although of course no definite opinion is now being expressed on this point. Apparently what the defendant is unwilling to disclose is a particular temperature control or so-called chilling process which it is not yet clear is an element of the plaintiff's claims.

Without intending to express any opinion, however tentative, as to the merits of the case, I take the view, for the purposes of the present motion, that the defendant's claim for secrecy as to the particular feature of its process is advanced in good faith, and not as a mere pretext for withholding evidence of what really constitutes...